Registering & Protecting Your Trademark, Dave Purdue, Purdue Law Offices
I am Dave Purdue and I have a law firm that’s called Purdue Law Offices. That was my dad, John Purdue. He worked in intellectual property law, but he had a specialty within that which was doing chemical patent work. I know nothing about chemistry except what I have learned from Kevin so thank you. I know nothing about making soap except what I just learned from Cathy. I’m going to stay away from the chemistry but I would like, well soap is chemistry. I’m going to learn a little bit about that. Today I want to talk about trademarks. I mentioned intellectual property, which would cover patents, copyrights and trademarks and also trade secrets. Patents in the soap field, patent might cover a process, a new process for making soap that has been invented. Copyright protects images and texts and a lot of labels that people put on soap; the content on that label would be protected by copyright. Trade secret protection, you don’t register that anywhere, you just keep the information to yourself, you keep it a secret to yourself. If somebody finds out your secret, then your protection is gone. Trade secret protection is generally reserved for things that aren’t eligible for patent protection. Then again they are only protected so long as nobody knows what that secret is. So as I told you I don’t know anything about soap so I want to talk about bicycle wheels and I want to tell you the story about a guy named Rolfe and he came to our office in 1991 and he said, “Can you get a patent for my invention?” And I said, “I don’t know what is it?” and he said, “It’s a wheel.” I worked with my father and two brothers were in the office so I was sure that one or more of them had found this guy and said well let’s send him in and see what Dave does with the guy that invented the wheel. I did, I looked around the corner to see which one of them was there and they weren’t there and I looked back at Rolfe and he’s sitting waiting earnestly for an answer and I said, “I don’t know, what’s different about it?” So he told me I and we looked for a prior patents that showed that and we didn’t find one and we actually got a patent for Rolfe on his bicycle wheel. He went around the country for three years trying to find somebody that he could make a deal with. Rolfe didn’t have a bicycle wheel company, so he went to find a manufacturer that he could license to make this wheel, and he found Treck Bicycle Company. Just before he signed a deal with Treck, he came in and he said he wanted to trademark his name and I said which one, Rolfe or Dietrich and he said Rolfe. I said well protecting a trademark would involve registering it and getting it registered is not a difficult process but how are you going to get a company to put Rolfe on the wheel, because it doesn’t mean anything. It doesn’t even sound very good, it kind of sounds like the morning after a college party. He says, “You leave that to me”. My wife Cathy and I went down to Charlotte to visit her family at Christmas and when I got back Rolfe said, “Well I made a deal with Treck”. Did you think maybe about asking me about the contract that you’ve made up? He had signed an agreement that he made and it was I owned the Rolfe trademark, I own these patents, I’m going to keep ownership and I’m going to license you “ Treck”, you can make the wheels according to my invention and you put Rolfe on them and we will do this for five years and see how things go. So Treck started building these wheels and selling them within three months, which is pretty amazing for a new product and because the Rolfe name didn’t mean anything, they went to the marketing firm that does their work and they said, “We want to build up Rolfe as a brand.” They spent a lot of money and they took the Rolfe name and they associated it with a high-quality bicycle wheel that was very light weight and very strong and then Treck sold a whole lot of these bicycle wheels. Pretty soon when people that spend too much money on bicycles and parts, when they would see Rolfe they would think, “Oh I would pay extra for that wheel because it’s a good quality wheel. Flash forward five years and it’s the end of the initial term of the license agreement and that was the first time that the president of Treck bicycle realized that Treck had taken a license under the trademark, Treck didn’t own the name Rolfe and Treck said, “Well, Rolfe, this has been more successful then you could have imagined and since you have made all this money, you can keep making money but we should pay you a lower percentage.” Rolfe thought about it and he said, “Well wait a minute.” Well a long story short, Rolfe and Treck got divorced. Treck walked out with, they got to make the wheels after Rolfe left and Rolfe walked out with the trademark. Over the course of these five years this trademark had been built up into something that people recognized and made some people willing to pay more than I would for a bicycle wheel and what did he do he started a bicycle wheel company and they sold Rolfe Wheels. The reason I’m telling you this is to lay the background for trademarks. All of Rolfe’s patents are expired. Anybody can make that exact wheel, they just can’t put Rolfe on it. Rolfe is the trademark and that’s where I learned the lesson that I think trademarks are the most valuable intellectual property that there is. Possible exception are trade secrets depending on what it is and what it does for you. Trademarks don’t expire as long as you are making your product and putting it the trademark on it. You continue to have a trademark right in that name. The trademark is how consumers will find your product. We have a brand and we have a brand name. The brand name is the trademark. The brand is what the people feel when they see the trademark. So when people see Rolfe, they get this reaction and they say, “Oh, that’s that good bicycle wheel.” When people see Newt and Fig, they say, “I like fig newtons” and then, “Oh that’s a good soap.” There is a reaction to people that are familiar with the brand name and that reaction is the brand, but at the center of the brand is that trademark, it’s that connection between the product and the consumer. So the brand is why people buy the product and the brand name is how they find it. So what is a trademark? It’s any word, it could be a slogan, or a tag line, could be a symbol like a graphic that is used by a person to identify or distinguish her products from other people’s products and to indicate the source of the product. For example, Essential Depot. So everybody is familiar with the trademark, Essential Depot and what do we feel when we see that. We get that feeling well that’s where the best essential oils come from. Brand name Essential Depot, brand is how we feel about that. Now we may not know where the source is, we may not know that Essential Depot is in Sebring, Florida, but that’s okay. We know that there is only one source for Essential Depot essential oils. Essential Depot decides what goes into those and Essential Depot has gone to great lengths and Kevin has been a part of that, I don’t fully understand what you are doing, but you are figuring out like Abbey Shuto would, what is in those oils and how they differ over time and geographic source and whether there is something that adulterates them or doesn’t. That’s okay, most consumers don’t understand all of the things that go into the product, but if they have a good positive association between Essential Depot and the product that is shipped to them, again that’s the brand. I know it is right after lunch, but the longer I talk and nobody asks questions the more trouble I feel like I’m in, so if anybody does have questions, please don’t wait until the end, just let me know I will try to answer them. Question: I have seen two symbols one is with an “R” with a circle around it and another is TM. Are those the same or are they different? Dave: They are different and to be entitled to use the “R” in a circle, you need to have registered your trademark in the Patent & Trademark Office and we will talk a little bit about the registration process. On Wine Soap Bar, there is an “SM”, which has several meanings, but here it means “Service Mark” and it’s just the flip side of “TM” which is “Trademark.” I recommend to people that they use the “SM” or “TM” prior to registering the trademark. It absolutely had no legal significance, but it looks good. It looks like you have taken your intellectual property seriously. Question: How long can you use those symbols? Dave: As long as you want Question: Now the service mark? Dave: Service Mark because Wine Soap Bar is where you go to learn about soapmaking and have a refreshing beverage. There is not a product, it is a service. McDonald’s functions as a trademark and a service mark, so the service is restaurant service and the product is the sandwich. So they could put “SM” and “TM” but they’ve gone that extra step and registered it, so they use the “R” in a circle. Question: In all three, register, service mark and trademark protect you? Dave: Yes, the owner of the trademark or the service mark has the right to stop other people from using a trademark that is so similar, yeah and I kind of forgot what Cathy (wife) is doing and I digress, and this has nothing to do with your question. Cathy is giving out some calendars. My father subscribed to Arizona Highway Magazine and they put out a calendar every year and so we mail them out to people that we know. On the back is a blurb about our law office but if you tear off that page, it’s just like a regular calendar, so feel free to do that. So again the trademark owner has the right to stop other people from using a mark that is so similar that people would be confused on seeing that second product, well does that come from the one that I know or not and we will talk about the test foreign infringement also again later. Question: So there is no seven year limitation? Dave: Oh well patents expire. If you’ve registered your trademark in the Patent and Trademark Office, and you’re still using it after 10 years, you can renew that registration. If you stop using it, you can’t renew it. So every 10 years there’s some paperwork and send more money down to the Patent and Trademark Office, maybe you pay a trademark lawyer to. Question: So the trademark is not registered? Dave: It doesn’t start out registered. Question: So you can just put it like “TM” and once you have registered it then you put the “R” next to it? Dave: Precisely. Positioned just about like a footnote would be, kind of up and to the right at the end of it. There are no footnotes in my presentation. Question: Can you fill out the paperwork yourself? Dave: Absolutely. Question: What if both people are using the TM on the same name? Dave: On the same name? Well one of them is going to be the owner of the trademark and the other one is going to be infringing. Question: Well the question is if two people are using the trademark and they are both using a “TM” on it, how do we know who is infringing? Dave: It is all about priority, who did it first. So if you pick a name and you put it on your product and somebody out of the woodwork has the same name on her product, one of you has established a trademark right and the other one is infringing and the owner of the trademark right is the one that used it first. The one who started second is the infringer. Question: In the materials Dave has bragged about representing clients from around the world and the question is, is there an international trademark and the answer is sort of. I know that sounds like a lawyer answer, so let me try to fill it out a little bit. The United States has a trademark law and Europe has a unified trademark law and within Europe Germany has a trademark law. So if I want to protect my trademark outside of the U.S., then I need to involve other countries. There is an international system for trademark registration and it is based on a treaty, it’s called the “Madrid Treaty” because it was negotiated mostly in Spain and one by one countries signed onto this treaty. The U.S. was Johnny come lately, it was out there for 15 years before we joined it. Canada is one of the holdouts. What the treaty provides is that I can register my trademark in the U.S. and then I can go into the U.S. Patent and Trademark Office and apply for international trademark registration. From the U.S. you have to have an application or a registration in the U.S. Based on that, I file the international application and I can designate one or more or all of the countries that have signed this treaty and then a single international registration would issue and that would protect your mark in all those countries that you have designated. Wonderful system, you only have to renew one registration, even though your mark would be protected in those countries. I don’t do any work outside of the U.S., but I do have attorneys in Europe and Russia that rely on me to protect their clients’ marks in the United States. That’s how I get to make that outlandish statement. In getting back to what Cathy was talking about in promoting yourself. The website page that Susan took and put in my materials is one that was “Search Engine Optimized” and “Not Written by Me”, which turns out to be a horrible mistake and next week I’m launching a new website and it’s called “Trademark Wahoo,” and I wrote what’s on there, so instead of focusing on all areas of intellectual property, I’ve made a conscience decision to work primarily to focus my practice on trademarks because again thanks to Rolfe I’ve come to the conclusion that trademarks are the most valuable kinds of intellectual property that there is. Question: I have a name for my company, the corporation, or the LLC and I register that with the Secretary of State, or Department of Commerce, depending upon where you are, I forget what you call your - Sunbiz Dave: Sunbiz on the website. I was there last week and I applied for a trademark registration for a distiller in Ft. Lauderdale last night before our dinner. It is very short time once you figure out what goes into it. So the question is I’ve got the name of this company registered with the state, is that a trademark or not and I think you already know the answer, it’s not a trademark. Question: So your .Org or your .Net to your website is all nothing. Dave: It’s all nothing until, there is no right associated with forming a company with a particular name. There is no right associated with the name if it’s registered as a domain name address. Trademark rights come from using the trademark to identify the source of your product, physically putting it on the product when you ship it. Registration is not required, the simple act of putting your trademark on the product and selling it. Again it either establishes a trademark right for you or you’re infringing. So before you put the product name on the soap, you should look for conflicts. I’m amused because we are kind of jumping all over the presentation that I put together which is wonderful. I would rather talk about things as people have questions, so let’s go back and see where my next slide is. Let’s talk about the kinds of trademarks that there are. Going back to our definition, trademark is any word, symbol, name or device. When I’m talking about a word or a word trademark, it can be a single word, “Coke”, it could be a slogan, those are two different trademarks, “Coke” and “Things go Better with Coke,” and both have been registered in the Patent and Trademark Office many times. Graphic symbols also serve as trademarks. So Coke has this unique swish, swirl, whatever. They put it on the can and even though Coke is not on the can, the color red, the white swish, you might be able to just identify that as a Coke product. Again just seeing that trademark brings to mind the taste of Coca Cola, either you like it or you don’t, but there is an association. Has anybody in the room not had a Coca Cola? We’ve all had a Coca Cola, you either like it or you don’t. You either like Coke or you like Pepsi and we could all recognize a Pepsi can if it didn’t say Pepsi, because it’s blue and it has a red shield in it. So the symbol a non-word trademark can serve to identify the source of a product. The “M” for McDonald’s. Bam, you know what kind of sandwich you are going to get. Catherine: I have a question before you change the slide. So I understand Coke is the registered trademark, so I guess you have answered my question anyhow. So the name Coke is the registered trademark so “Things go Better with Coke” do they have to register that to, the symbol do they have to register that too. So when you said they had 100 times registered, are they registering all of these things to distinguish the source of them? Dave: And there are many with Coca Cola, the slogan, the word “Coke”, the word “Coca Cola”, the white script, so that’s been registered. I think of them as “Trademark Nerds,” think of them as non-traditional marks and are we are we thinking of the green fluted Coca Cola bottle? Can you picture the green bottle of Coca Cola with the green flutes on it? That is a registered trademark. Cathy: Mexico still has them Dave Oh you can get them in Kroger in Toledo, Ohio also. Cathy: Are they required to register all of those different source identifiers? Dave: And the answer is you don’t have to register any of them. Cathy: Oh I know. Dave: But you can’t register them as a group. You would have to register them individually. The mark is the mark. Question: There are many different names with the soap business. You are going to have your company name, you’re going to have the name that goes on the soap and then you’re going to have under that main soap name, and you’re going to have flavors, the kinds of soap. Dave: So the name goes on the soap, goes on all of the soap, we call that a “primary” mark and then we have secondary marks that go under that. Each of those can serve as a trademark, but when you’re in the soap and cosmetic world, typically when you get down to that secondary name that’s on the soap it’s identifying the flavor or type of scent or something about it. When we get into things that describe a property of the product, if we’re talking about words that describe things about the product, then we’re talking about not trademarks. So you would definitely want to register the primary mark that goes on all your products. Some secondary marks can function as trademarks, secondary names. Many people get to the point where they say, “Well how many registrations am I’m going to get?” You should get the primary one registered and the rest of it is a business decision. Question: I wanted to touch upon one thing about using generic terms because there was an incidence actually in the soapmaking community where a soapmaker trademarked the term “soap loaf.” It caused a big uproar and everyone collectively gathered all of their evidence that they all used it first and it ended up turning out that the person didn’t want to fight this fight and surrendered it. I just wanted to mention it because of the generic nature so that no one tries to like, I’m going to trademark “Soap Bar” or “Soap Loaf”, or anything like that. Audience: We did the same with “soap equipment.com” and that wasn’t enough because it was too common, so we had to put a little circle on it and a couple of other things, change the colors, so it came out as a “logo”. Dave: So the question that’s on the table has to do with words that are the generic name of something versus a trademark and so the generic name of a product can’t indicate the source of the product because anybody can make that product and call it what it is. Soap Loaf and I learned about that Soap Loaf problem and it highlights one of the things that makes my hair fall out faster dealing with the Patent and Trademark Office. Someone was using Soap Loaf, well lots of the people were, but one of the people that was using “Soap Loaf” made an application for Federal trademark registration. Those are then examined by attorneys in the Patent and Trademark Office, who are not necessarily soapmakers and that examining attorney didn’t know that Soap Loaf is what we are going to take out of the mold that you poured soap in. Well okay it was not soap when it went in, it’s saponifying, and when the saponification process concludes, I will take a shower and not until then because I will have soap. So the examining attorney did not know that Soap Loaf is a thing that everybody makes in a loaf mold, that’s the generic term, and so that is the definition of not a trademark. Cathy: But they were given that trademark weren’t they? Dave: Yes, somebody in the Patent and Trademark Office that didn’t know that was the generic term approved the application to register Soap Loaf and it issued, and yes the soapmaking community and members that were aware of this were not happy because I understand that the owner of that Soap Loaf registration sent out not nice letters to people that were selling soap loaves. Bonnie: I got one of those letters. Dave: So did many other people. Cathy: So wasn’t she also going on Etsy or something and having those listings taken down. Audience: She was going on E-Bay, Etsy and any other third party platform that had anything like Soap Loaf and they were since they owned the name the trademark they were being removed left and right and then I ended up calling the Soap Guild who handles all these soap legal matters and it turns that there were about three people who were geared up to go to court, three big players were geared up to go to court over this and the former owner of the trademark decided to just surrender it. Dave: So the question isn’t a question but it’s the rest of the store about the Soap Loaf matter and it was registered, she was using the “R” in a circle and as the owner of a Federal Trademark registration you have a duty of keeping other people from using your trademark because one function of a trademark is to identify the source of a product, so if more than one person is using the same or very similar trademark, it is no longer indicating the source of that product. But Soap Loaf can indicate a source of a product and people were ready to ask the Patent and Trademark Office to cancel that registration and before anything was filed, the owner of that registration because of the backlash from the soapmaking community, surrendered her registration and stopped sending “cease to exist” letters and that problem was solved, generic terms, not trademarks. Another part of the definition of a trademark is one that I have already used to identify and distinguish one person’s product from another person’s product and so the example that I picked not “Soap Loaf but “Bath Fizzy” which somebody mentioned as I was talking. Bath Fizzy is a thing, it’s not a trademark. Bath Fizzy, bath bomb, those kinds of names. Bath Fizzy is a registered trademark, but it is registered for collectible action figures, and that’s okay. Apple is a generic term, but it’s not a generic term for computers; so perfectly fine trademark for not apples. Kevin: So could you have Coke soap? Dave: The question is could you put the trademark Coke on your soap the answer is that I recommend against putting Coke on your soap. But for different reasons for genericness, Bonnie: What if we just get a wild hair as a soapmaker and we put coca cola in the soap, what can we call it, cola soap? Dave: So the question is and I have answered Dr. Dunn’s questions, but if you want to put Coke scent into a soap, literally pour coca cola in it or maybe you would concentrate it or use the syrup, can you put on the label, “Coca Cola Soap?” Coca Cola doesn’t sell soap so maybe it’s okay, but then you’re running into the problem that Coke is so widely recognized that it’s what we would call a very strong trademark and technical trademark term is it’s is a famous trademark and famous trademarks get a higher level of protection and the owners of a famous trademark then are able to stop people from using that mark on unrelated products. So please don’t. Cathy: You could collaborate with Coke and Coke says “Yes, Dr. Dunn, you can make our Coke soap. Dr. Dunn: I didn’t mean coca cola, I meant cocaine. When you heat coal it turns into coke and that is a legitimate name for a legitimate product, I grind up my coke and I put it in my soap. Dave: Now we’re talking now about the idea that coke refers to different things, coke is a trademark for the coca cola product, coke is also something that is mined, coal. Cathy: Coke is a byproduct of burnt coal Dave: Coke is a byproduct of burnt coal and you might put that into your soap and you might want to indicate on the label that there is coke in your product and that would be a fair use a not an infringing use of the word “Coke” to indicate something that is true about the product inside. You would want to be very clear that you are using it with reference to that product. If you wanted a soap that had a coca cola aroma or flavor, I guess, if you got your mouth washed out with soap, you would not want to use Coke” or coca cola because that’s clearly referring to the cola smell of the product. But you could use the generic term that “Pepsi” uses and “Coke” uses, which is cola as you said Bonnie. Dave: Did we run out of calendars? Okay, I’ll bring more next time. Dave: I do want to talk about the different flavors of trademarks, different strengths of trademarks, I guess I want to ask a question? Is everyone here that makes soap putting a trademark on the product? Audience: Cathy is. Dave: No, I mean do you have a word on your soap. Are you selling soap? Audience: Yes, the company name. Dave: Does the company name. Does the company name go on your product? Cathy: Mine does with “TM” Dave: At the very beginning of the trademark process, you have to pick a trademark. There are good trademarks and there are trademarks that are not as good. It’s like salsa, they come in different flavors, different strengths and there is a continuum of strength, we have descriptive terms and I’m thinking here about “Super Glue”. We talked about primary trademarks and then secondary marks and a lot of times when you get down below the primary trademark you have a type of soap, a flavor, a scent for the soap and that merely describes that soap, so that isn’t going to serve to identify the source of your product. When we move down the line from descriptive terms we get to suggestive terms and those have some strength. When we go beyond descriptive terms we go to arbitrary terms and Apple is a good example of an arbitrary term. In one context Apple is generic but as a trademark for a not fruit, Apple is arbitrary. It’s arbitrarily applied to a product that doesn’t have anything to do with the word, that’s an arbitrary strong trademark. The only thing that’s stronger is a coined term and Kodak is a coined term, meaning it was just a word that was made up and then used as a trademark, very strong. There is a problem in picking trademarks that are too descriptive, they are difficult to register and they are difficult to protect. People are entitled to use words that describe their product and we don’t want to take those away under the trademark laws. So please, if you are thinking of a trademark, think of something that’s not descriptive. Think of something that might suggest a quality that you want your customers to associate with it or go beyond that and pick something arbitrary, like Apple for computers. We talked a little bit about company names and the fact that registering your company name with the state that you do business in does not create a right to stop other people from using that name on their product. Using a trademark requires that you be in commerce selling a product. People form companies all the time and they sit dormant for a couple of years, well there is no association at that point between the mark and the product. So again, it’s only after you start using the trademark and by using, I mean putting it on your product and selling it, that there is a trademark right. So if you have a company name that is generic or merely descriptive, you are not constrained in any way of picking a totally different trademark than your company name. So you can pick a name that is different from your company name, use it as a trademark. McDonald’s has a trademark but they also have a Big Mac. Highly suggestive, no, the one I’m thinking of is quarter pounder with cheese. How more descriptive can you get of a quarter pound hamburger but they used it long enough that it started to be associated with McDonalds. Of course it is not the company name, so you don’t have to match those up. Nowadays, with the domain name registrations, the best case is where you can register the domain name, form a company under the name, and have that be the same as your trademark, but you don’t have to do that. So pick a strong trademark. So you’ve picked a strong trademark, if you use it again, you are either creating a trademark right or you are infringing somebody else’s mark. So look, check, check the internet, and look for those words. If somebody is using it on not soap, like plumbing supplies, you can use it on plumbing supplies without there being a conflict. Cathy (wife); so you can use it on your soap without being a conflict. Dave: I didn’t mean to say you could use it on plumbing supplies if somebody else is using it on plumbing supplies, unless it’s coca cola. Question: Do you always to have to use like say you are writing a letter to somebody or you put something on the internet and you have a “TM” on your name but you forgot to put that behind you name. Could somebody come in and then say, “Well you forgot to use that, now I can take it over?” Dave: We are talking about a word that you are using as a trademark and we are talking about the use of the “TM” where you would put the “R” in a circle if you were registered in the Patent and Trademark Office and can you lose rights by not using the “TM” and the answer is no you can’t lose any rights because use of the “TM” doesn’t give you any rights. There are rights that come solely from selling the product with that name on the product and that does establish a trademark right. Registration is another level of protection which we are about to talk about, but forgetting to use the “TM” even forgetting to use the “R” in a circle will not make your trademark rights evaporate. So how do you find a conflict, if it’s out there, find it before you do all of your packaging and printing. You can look on the internet as I said. You can also look at a database of trademarks maintained by the Patent and Trademark Office and the website for the Patent and Trademark Office is an acronym, United States Patent and Trademark Office or USPTO.GOV because it is a government website. There is a database that has every mark that is registered, every mark that was registered and the registration lapsed, every pending application for registration that is being examined and every application that was filed it didn’t issue as a registration. So if you have an application that was filed and no registration issued, that mark in all likelihood is going to be available for you to use, but do that before you decide to go forward with a mark. Every state has a trademark registration system, so you can look there. There are lawyers that will do what’s called a “full search” and they will look in all these places and trade journals. You’re looking at an expenditure of over $1,000. In my practice, I start with a conflict search in the trademark database at the Patent and Trademark Office and if we don’t find a conflict there and the client goes ahead with an application, more than 95% of the time the mark is registered and no conflicts found. Sometimes examining attorneys will approve registration of a generic term like “Soap Loaf” and sometimes examining attorneys will find a conflict with a similar mark where I’m pretty sure there isn’t one but there are differences of opinion in trademark infringement and conflict, so if there is a conflict at the Patent and Trademark Office the answer is clear and if not, you can keep searching. At some point you decide you’ve done due diligence and you are going to go ahead with that trademark. And this is what I started early in my presentation talking about, just putting the trademark on your product and selling it creates an enforceable right in that trademark. Registration is not required. There is a possibility that you put it on your product and sell it and you are infringing somebody else’s right. If you’re not, you are creating your own trademark right and the right to stop other people from using a confusingly similar mark. Here is my great example of an unregistered trademark. I put “Dave” on my soap, I sit in my chair and I sell it, and I have a trademark right. Let’s talk about trademark conflicts, and we’ve already touched on it. The test is likelihood of confusion, so we have already laid that out. If I know a trademark associated with bicycle wheels and I see the same name on bicycle riding jerseys, I might think those jerseys come from the same place. Well if they come from different places, then the person who later put it on the jerseys is infringing the trademark right of the owner of the trademark for bicycle wheels. We want to do a balancing test here. We are going to look how similar the trademarks are and we want to look at how related the products are. So the trademarks might be identical, but the products are so different there is no conflict, or vice versus, you can have a trademark on the same product and if the mark by itself is different enough, you won’t be confused if they are used at the same time. It’s a balancing test. We compare the marks, we’re going to look at how do they appear, what the marks sound like, what’s the commercial impression of the mark. To answer the question how similar are they. Talking about similarities between products, are they the same, are they used together. There was a Gallo brother who had a falling out with the Gallo Winery and the rest of his family and he said fine, “I’m not going to play with you and make wine,” and so he went out and sold Gallo Cheese and it was determine that there was a conflict because people drink wine and eat cheese together at the same time. They are not the same product, they are not competitive, you don’t find them in the same section of the store, but at one end Gallo is a very well-known mark, so it was a little stronger and it gets a little broader scope of protection. Well if we establish a trademark right just by putting it on our product, why would we register it? Well we would like to keep trademark lawyers employed and we got that going but there are several other advantages. You get to use that awesome “R” in a circle, people see that and I think it conveys the impression why I have this intellectual property and I take it seriously. That’s one of the benefits. This is a huge benefit to have your trademark registered in the Patent and Trademark Office makes it easy for anybody to find. Anybody could be somebody that’s thinking about using your trademark on her product. So we want to make it easy for people to find your mark so that they will know better than to pick the same trademark. A mark that has been registered at the Patent and Trademark Office when it happens you get a Certificate of Registration, it’s a piece of paper, but having that piece of paper carries certain presumptions with it. You can walk into court, if somebody is infringing, you take your Trademark Certificate and you are presumed to have a valid trademark, something that’s not generic. You are presumed to be the owner of that trademark and it’s presumed that you have the right to stop other people from using a confusingly similar trademark. Question: Is it beneficial for just having that registration symbol? Dave: I think it is. I think customers like to see that and I think competitors will give you a little more respect if you have gone to the trouble of registering it and you’re using the registration symbol. And in getting back to your question, I have a company name, do I have a trademark? You knew the answer, we don’t. We don’t establish a trademark right by registering a domain name, it’s only by putting that trademark on your trademark on your product and selling the product. So I know you are getting tired of my saying that so I’ll stop. What’s trademark infringement? We’ve laid it out. It’s somebody using a mark that’s so similar to yours on a related product that I’m going to see that other person’s mark and think, “Oh that’s coming from Dave,” like Dave’s unregistered soap trademark in the example where I’m sitting in my chair. All kind of trademark infringements, there is “ Oop’s I’ve made a mistake”, theirs is counterfeiting and in between. Some people want to come as close to a famous trademark as possible without infringing to kind of get a side benefit, the recognition that there is for that trademark. Here is a fun trademark infringement in your soap industry, Plumb Island had a cool trademark, it’s on the left and they took various soaps and cosmetics and they sold them in a can and the trademark was “The Man Can,” and a competitor thought that is a great idea, we won’t use “The Man Can,” we’ll put a product in a can and we will call it, “The Manly Man Can.” That didn’t go over well and a judge told them you can’t, it’s “The Manly Man” can’t. So that was pretty clear infringement. Question: Can you use if somebody owns the trademark “Manly Man Can” can you use “The Man Can”, would it be a conflict if somebody used “The Manly Man Can’t.” The analysis is the same, if I knew The Man Can and I saw The Manly Man Can’t, would I think they were coming from the same place. Let’s take a vote, you think yes there would be an infringement? You think no it’s ok? I’m sorry I don’t know the answer, because the court hasn’t decide on that, but the court of public opinion has a lot of sway. Bonnie: They would look at this case and they would say no, because this one says similar and they have already ruled. Dave: Precedent, we call it precedent. Amanda: My question is a lot of people use imbeds in their soap. Basically, let’s say Disney comes out with little trays of silicone things of Mickey Mouse, Cathy: Ice cube trays. Amanda: Ice cube trays and I go and put melt and pour in them, which is soap, and I say, “Okay I’m going to put this image, which is trademarked by Disney on my soap, and I’m going to sell it.” Is that a trademark infringement? Dave: So the question is I can get something from Disney. Are we talking about a figure or Amanda: Let’s say it is a Mickey Mouse face. A lot of people use that, as my cousin is making shoes with little Mickey Mouse and Donald Duck painted on them. I told her you’re going to get in a lot of trouble for that. Whether you are hand painting them on or not, those images are copyrighted and lot of people sell imbeds of Mickey Mouse and things on their soaps and I would say that is copyright infringement or trademark. Dave: The question is, Disney has instantly recognizable characters, let’s go with Mickey Mouse and can you put that into your soap, whether it’s like imprint or it’s a figure that’s imbedded in the soap. Well let’s analyze it. If I see Mickey Mouse won’t I think that Disney’s involved and the answer would be yes and if Disney’s is not involved in doing that, has not given you permission, then you would be infringing the right of Disney. So please don’t do that, unless you make a deal with Disney. Cathy: But she legally bought that ice tray from the Disney at the Disney store to use any way she wanted to. Dave: The further point is that Disney sells these, they sell ice trays with these characters in the tray and you could melt and pour or make your soap in that tray and you have bought the trays legally, you own the characters, it is only when you put that out in commerce again and people see that. You can make that and use that in your house all day long, you are not infringing anything but if you put them out in a commerce and people see Mickey, they say “Hi Mickey,” they are going to say that it is somehow soap from Disney. Question: There was a day care center that painted Mickey Mouse characters on the wall, they actually came out and made them cover them up. Dave: The question has to do with another use of Mickey Mouse, put on a building, where in this case day care was provided. Disney objected and the person who ran the day care wisely covered that up. So it’s that false association, that confusion about the source of it. Is Disney part of the source and if it is not you’re infringing. Question: So if you are not selling and you just give it away to friends and family, it’s okay. Dave: So now we are in-between. You are not using it for yourself but it has Mickey Mouse in it and you’re not selling it but you are giving it away. Is that an infringement or a conflict and I would say if I’m doing that I have three friends. I’m trying to find more. If I gave it to three friends, Disney isn’t going to have a problem with that. If I had a lot of friends and I gave it to all of them I might make Disney upset. Some things you do with Disney products if you go outside using it for yourself, you are not going to be on Disney’s radar. So brand name is the trademark, what is your brand name? It is how people associate your product with your brand, which is the emotional reaction that people have. So the trademark is at the center of your brand and you are also at the center of your brand and that is how people know you make a good product. Question: Is it quicker to do it through an attorney? Dave: Oh, no it takes the same amount of time. I mentioned the USPTDO.GOV website. Please go there if you have any interest in learning more about trademarks. They’ve put together a half a dozen, maybe a dozen videos from how to select a good trademark, how to use it, how to apply to register, how to maintain that registration. We talked about the renewals and there is a frequently asked question section in the trademark information pages. Do you need a lawyer, no you don’t. I’ve been involved in almost 700 trademark registrations and I’ve learned some things, so I do have some special knowledge, but I have seen time and time again people who are not trademark lawyers successfully register their name as a trademark. I don’t like to tell people that but that’s what I have to tell people that’s true, you can do it yourself. Question: What would an attorney charge to do a trademark? Dave: What would an attorney charge to do a trademark application? The total cost would be, there is $225 government filing fee and trademark lawyers charge anywhere between about $500 and I was going to say $1,000, but if you were in New York City, you would probably pay $2,000 to $3,000. When I have a trademark owner come to me I’m not going to focus on the registration, I want to educate that person about trademarks and to do it personally. So I mention that I filed a trademark registration last night before I came down for the barbecue. That took 14 minutes. Before that I was on the phone for three hours with the trademark owner because we had a lot to discuss. So there is more to it than pushing the buttons and charging your credit card for the filing fee. Dave: So the gentlemen is talking about his trademark which is “Soap Equipment.Com”. Sounds like something that describes what you’re doing, selling soap equipment so there were problems getting the application approved and after three or four times ultimately there was success. So the answer is some trademark lawyers are better than others.
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